While the Prometheus case deals with patent processes that contain a law of nature, versus Myriad’s isolation of a gene sequence from nature, the Court’s evident concern with maintaining the proper balance of the patent system, by encouraging diagnostic research and ensuring that information derived from nature is not monopolized to prevent valuable discoveries, is certain to play an important role in the ultimate conclusion of the Myriad case.

One judge at the CAFC had found that the claims to the isolated BRCA DNA to be patent-eligible based on the isolated DNA having “markedly different characteristics” from chromosomal DNA. Claims to a method of screening DNA for BRCA mutations were patent ineligible and claims to a method of drug screening were patent eligible.

The patentability of isolated DNA was not at issue in Prometheus.

Could the folks patenting isolated genes be facing a "Great White" moment?

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I'm a patent lawyer located in central New Jersey. I have a J.D. from the University of Chicago and a Ph.D. from Stanford University, where I studied graphite intercalation compounds at the Center for Materials Research. I worked at Exxon Corporate Research in areas ranging from engine deposits through coal and petroleum to fullerenes. An article that I wrote in The Trademark Reporter, 1994, 84, 379-407 on color trademarks was cited by Supreme Court in Qualitex v. Jacobson, 514 US 159 (1995) and the methodology was adopted
in the Capri case in N.D. Ill. An article that I wrote on DNA profiling was cited by the Colorado Supreme Court (Shreck case) and a Florida appellate court (Brim case). I was interviewed by NHK-TV about the Jan-Hendrik Schon affair. I am developing ipABC, an entity that combines rigorous IP analytics with study of business models, to optimize utilization of intellectual property. I can be reached at C8AsF5 at yahoo.com.